DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-4 and 6-16 are currently pending and are subject to this office action. Claim 5 is amended. Claims 1, 6-8, and 10 are amended. Claim 16 is newly added. This office action is in response to Applicant’s amendment filed on 04/30/2026.
Response to Amendments
Examiner acknowledges Applicant’s response filed on 04/30/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, on pages 6-11, filed 04/30/3026, with respect to the rejection of claims 1 and 10 under 35 U.S.C. 103 have been fully considered and are not persuasive. The Applicant has amended claims 1 and 10 to include a limitation of now canceled claim 5. The Applicant argues that the cited compression protrusions are short walls that appear like mere projections, rather than a pair of sandwiching walls. Further, that there are four protrusions rather than a pair of walls forming the compression cylinder.
The Examiner respectfully disagrees. Reevell teaches protrusions (Fig. 4: #140) in the form of elongated longitudinal members extending parallel to the chamber axis (Pg. 12, Lines 26-30 & Pg. 18, Lines 30-31). The protrusions are provided on the inner surface of a tubular wall (Fig. 4: #126) and extend sufficiently far along the chamber to cause compression and maintain engagement throughout insertion of the substrate carrier (Fig. 4: #114, Pg. 14, Lines 24-27).
Additionally, Figure 12a discloses opposed protrusions (Fig. 12a: #140) positioned on opposite sides of the chamber. Although Reevell teaches embodiments having a multitude of engagement elements (Pg. 2, Lines 23-24), wherein the engagement elements are the protrusions, Reevell also teaches an embodiment including only one pair of opposing engagement elements (Pg. 2, Lines 20-24), further satisfying the requirements of the claim. The exact form of the protrusions may be chosen based on desired effects (Pg. 12, Lines 35-37). Further, the presence of additional protrusions does not negate the existence of the claimed pair of opposite sandwiching walls. A structure containing four opposing compression protrusions necessarily includes at least one opposing pairs of protrusions.
The following are modified rejections based on Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 6-15 are rejected under 35 U.S.C. 103 as being unpatentable over Reevell (CA 3113493 A1), and further in view of England (US 20190116875 A1) and Pienemann (EP 2801269 A1)
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With regard to Claim 1, Reevell teaches (i) a substrate carrier (Fig. 6: #114), for use with an aerosol generating device (Fig. 4: #100, Pg. 2: Lines 4-5). (ii) The substrate carrier comprises an aerosol substrate portion (Fig. 4: #128) that may comprise shredded tobacco material (Pg. 44: Line 13 & Lines 19-20) and may be surrounded by an outer layer of paper (Pg. 44, Lines 32-34). (iii) A mouthpiece region (Fig. 4: #130) is coaxially coupled to the aerosol substrate portion (Fig. 6: #128) and wrapped with an outer layer (Fig. 4: #132) together. (iv) The aerosol generating device (Fig. 4: #100) includes a hollow area defining a heating chamber (Fig. 4: #108) and the substrate carrier (Fig. 4: #114) is inserted into the heating chamber (Fig. 4: #108, Pg. 2: Lines 4-5).
(v) The substrate carrier (Fig. 4: #114) is inserted in the heating chamber (Fig. 4: #108) surrounded by a tubular wall (Fig. 4: #126), relating to the compression cylinder of the claimed invention, and is compressed by an inner wall surface of compression protrusions (Fig. 4: #140) of the tubular wall (Fig. 4: #140). (vi) A side wall of the tubular wall (Fig. 4: #126) is formed together with the protrusions (Fig. 4: #140) and is used to heat an outer part of the aerosol substrate portion (Fig. 4: #128, Pg. 11: Lines 5-8). (vii) A cross-sectional area of the substrate carrier (Fig. 4: #114) is greater than an inner cross-sectional area of the tubular wall (Fig. 4: #126) and defined such that the substrate carrier (Fig. 4: #114) is inserted in the region surrounded by the tubular wall (Fig. 4: #126) and compressed by an inner wall surface of the compression protrusions (Fig. 4: #140).
(viii) A side wall of the tubular wall (Fig. 4: #126) is formed together with the protrusions (Fig. 4: #140) and is used to heat an outer part of the aerosol substrate (Fig. 4: #128, Pg. 11: Lines 5-8).
(ix) The outer layer (Fig. 4: #132) is defined as a region located adjacent to an open end (Fig. 4: #110) of the heating chamber (Fig. 4: #108) with respect to the side wall of the tubular wall (Fig. 4: #126) when a distal end of the substrate carrier (Fig. 4: #114) is inserted to the prescribed location of the heating chamber (Fig. 4: #108).
(x) Reevell further teaches wherein the tubular wall (Fig. 12a: #126) comprises the opposing longitudinal compression protrusions (Fig. 12a: #140) extending along an axial direction of the tubular wall (Fig. 12a: #126). (xi) The aerosol substrate (Fig. 6: #128) is inserted into the tubular wall (Fig. 12a: #126, Claim 1) and compressed by an inner wall surface of the compression protrusions (Fig. 12a: #140) to compress an aerosol substrate and provide an interference fit for the aerosol substrate portion (Fig. 4: #128, Pg. 14: Lines 12-15). Reevell teaches all the limitations of the claims as set forth above, however Reevell is silent to:
An air hole provided in the mouthpiece portion
A location of the air hole provided in the mouthpiece portion is defined so as to coincide with a location of an insertion point of the heating chamber when a distal end of the tobacco rod portion is inserted into a prescribed location of the heating chamber
Part of an outer surface of the tipping paper is coated with a lip-release material
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In regards to i. and ii., England, directed to an article for use in an apparatus for heating smokeable material, teaches (i) a non-combustion heated tobacco rod including ventilation holes (Fig. 3: #317) that are provided in a filter assembly (Fig. 3: #305) with an end for the user to inhale from. (ii) The location of the ventilation holes (Fig. 6: #317) coincides with an insertion point (Fig. 6: #20) of the heating chamber (Fig. 6: #29) when a distal end of the of the smoke article (Fig. 3: #301) is inserted into the heating chamber (Fig. 6: #29).
Therefore before the effective filing date off the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the hollow tube heater of Reevell to comprise an air hole provided in the mouthpiece portion and wherein a location of the air hole provided in the mouthpiece portion is defined so as to coincide with a location of an insertion point of the heating chamber when a distal end of the tobacco rod portion is inserted into a prescribed location of the heating chamber because both Reevell and England are directed to lowering the risk of burning in smoking articles. England teaches ventilation holes to aid with cooling of the smoking article [0004] and this merely involves applying a known temperature control technique to a known smoking article ready for improvement to yield predictable results.
In regards to iii., Pienemann, directed to a smoking article, teaches (iii) wherein a mouth end of a smoking article may comprise tipping paper coated with lip release material to improve haptical and optical properties of the tipping paper [0017]. One of ordinary skill in the art would find it obvious to apply a coating of the lip release material to the mouth end segment of Reevell to improve user comfort and reduce lip adhesion to the article.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the tipping paper of Reevell to wherein a part of an outer surface of the tipping paper is coated with a lip-release material because both Reevell and Pienemann are directed to improving the user smoking experience. Pienemann teaches tipping paper with a lip release material to improve haptical and optical properties of the tipping paper [0017] and this merely involves combining known tipping paper materials of a known smoking article ready for improvement to yield predictable results.
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With regard to Claim 2, Reevell teaches wherein a distal end of the substrate carrier (Fig. 6: #114) is inserted into the deepest part of the heating chamber (Fig. 6: #108).
With regard to Claim 3, modified Reevell teaches wherein the mouth end segment (Fig. 6: #130) is surrounded by lip release material.
Wherein the lip-release material region is a region located between the air hole and a mouthpiece end of the mouthpiece portion
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England, teaches wherein the mouth end segment (Fig. 3: #311) is in a region located between the ventilation holes (Fig. 3: #317) and a proximal end (Fig. 3: #313), acting as a mouthpiece end for a user [0066] to aid with cooling of the smoking article before it reaches the user [0004].
Therefore, before the effective filing date off the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the lip-release material region of modified Reevell to comprise a region located between the air hole and a mouthpiece end of the mouthpiece portion because both Reevell and England are directed to lowering the risk of burning for smoking articles. England teaches ventilation holes to aid with cooling of the smoking article [0004] and this merely involves applying a known temperature control technique to a known smoking article ready for improvement to yield predictable results.
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With regard to Claim 4, Reevell teaches a substrate carrier (Fig. 6: #114) that is deformed upon insertion into the tubular wall (Fig. 6: #126) due to engaging with protrusions (Pg. 14, Lines 2-7). One of ordinary skill in the art would have been motivated to choose a range of compression sufficient to hold the substrate carrier securely while also avoiding excessive deformation that would limit the function of the substrate carrier (Fig. 6: #114), requiring routine optimization to meet the ranges of the claimed invention (MPEP 2144.05).
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With regard to Claim 6, Reevell teaches opposed parallel compression protrusions (Fig. 12a: #140) extending along an axial direction of the tubular wall (Fig. 12a: #126) to compress an aerosol substrate (Pg. 14: Lines 12-15).
With regard to Claim 7, Reevell teaches wherein the substrate carrier, comprising the aerosol substrate, has a diameter of 7.0 ± 0.1 mm (Pg. 15: Lines 20-21). The restricted diameter caused by the protrusions in the heating chamber is between 6.0 mm and 8.0 mm (Pg. 16: Lines 29-32), producing a ratio of about 103% - 117%, overlapping with the range of the claimed invention and is therefore considered prima facie obvious.
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With regard to Claim 8, Reevell teaches wherein when the article (Fig. 6: #114) is inserted into the deepest part of the heating chamber (Fig. 6: #108), a whole of the aerosol substrate portion (Fig. 6: #128) and part of a mouthpiece region (Fig. 6: #130) are compressed by the inner wall surfaces of the protrusions (Fig. 6: #140, Pg. 39: Lines 12-16).
With regard to Claim 9, Reevell teaches wherein the mouthpiece region (Fig. 6: #130) is compressed upon insertion into a tubular wall by protrusions (Fig. 6: #140, Pg. 39: Lines 12-16). One of ordinary skill in the art would have been motivated to select a range of compression sufficient to hold the mouthpiece region of the substrate carrier securely while also avoiding excessive deformation that would limit the function of the substrate carrier (Fig. 6: #114), requiring routine optimization to meet the ranges of the claimed invention (MPEP 2144.05).
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With regard to Claim 10, Reevell teaches (i) a substrate carrier (Fig. 4: #114), for use with an aerosol generating device (Fig. 4: #100), that is heated from an outer surface of the substrate carrier (Fig. : #114) when inserted into a hollow heating chamber (Fig. 4: #108, Pg. 2: Lines 4-5). (ii) The substrate carrier comprises an aerosol substrate portion (Fig. 4: #128) that may comprise shredded tobacco material (Pg. 44: Line 13 & Lines 19-20) and be surrounded by an outer layer of paper (Pg. 44, Lines 32-34). (iii) A mouthpiece region (Fig. 4: #130) is coaxially coupled to the aerosol substrate portion (Fig. 4: #128) when wrapped with the outer layer (Fig. 4: #132) together.
(iv) A cross-sectional area of the substrate carrier (Fig. 4: #114) is greater than an inner cross-sectional area of a tubular wall (Fig. 4: #126) and defined such that the substrate carrier (Fig. 4: #114) is inserted in the region surrounded by the tubular wall (Fig. 4: #126) and compressed by an inner wall surface of the compression protrusions (Fig. 4: #140). (v) A side wall of the tubular wall (Fig. 4: #126) is formed together with the protrusions (Fig. 4: #140) and is used to heat an outer part of the aerosol substrate (Fig. 6: #128, Pg. 11: Lines 5-8).
(vi) The aerosol substrate (Fig. 6: #128) is inserted into the tubular wall (Fig. 6: #126) comprising longitudinal compression protrusions (Fig. 12a: #140) to compress an aerosol substrate within its carrier and provide an interference fit of the substrate carrier (Fig. 6: #114, Pg. 14: Lines 12-15). (vii) An outer surface of the paper (Fig. 6: #132) is defined as a region located adjacent to an open end (Fig. 6: #110) of the heating chamber (Fig. 4: #108) with respect to the side wall of the tubular wall (Fig. 4: #126) when a distal end of the substrate carrier (Fig. 2: #114) is inserted into the heating chamber (Fig. 4: #108).
(viii) Reevell further teaches wherein the tubular wall (Fig. 12a: #126) comprises the opposing longitudinal compression protrusions (Fig. 12a: #140) extending along an axial direction of the tubular wall (Fig. 12a: #126). (iv) The aerosol substrate (Fig. 6: #128) is inserted into the tubular wall (Fig. 12a: #126, Claim 1) and compressed by an inner wall surface of the compression protrusions (Fig. 12a: #140) to compress an aerosol substrate and provide an interference fit for the aerosol substrate portion (Fig. 4: #128, Pg. 14: Lines 12-15). Reevell teaches all the limitations of the claims as set forth above, however Reevell is silent to:
An air hole provided in the mouthpiece portion
A location of the air hole provided in the mouthpiece portion is defined so as to coincide with a location of an insertion point of the heating chamber when a distal end of the tobacco rod portion is inserted into a prescribed location of the heating chamber
Part of an outer surface of the tipping paper is coated with a lip-release material
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In regards to i. and ii., England, directed to an article for use in an apparatus for heating smokeable material, teaches (i) a non-combustion heated tobacco rod including ventilation holes (Fig. 3: #317) that are provided in a filter assembly (Fig. 3: #305) with an end for the user to inhale from. (ii) The location of the ventilation holes (Fig. 6: #317) coincides with an insertion point (Fig. 6: #20) of the heating chamber (Fig. 6: #29) when a distal end of the of the smoke article (Fig. 3: #301) is inserted into the heating chamber (Fig. 6: #29).
Therefore before the effective filing date off the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the hollow tube heater of Reevell to comprise an air hole provided in the mouthpiece portion and wherein a location of the air hole provided in the mouthpiece portion is defined so as to coincide with a location of an insertion point of the heating chamber when a distal end of the tobacco rod portion is inserted into a prescribed location of the heating chamber because both Reevell and England are directed to lowering the risk of burning in smoking articles. England teaches ventilation holes to aid with cooling of the smoking article [0004] and this merely involves applying a known temperature control technique to a known smoking article ready for improvement to yield predictable results.
In regards to iii., Pienemann, directed to a smoking article, teaches (iii) wherein a mouth end of a smoking article may comprise tipping paper coated with lip release material to improve haptical and optical properties of the tipping paper [0017]. One of ordinary skill in the art would find it obvious to apply a coating of the lip release material to the mouth end segment of Reevell to improve user comfort and reduce lip adhesion to the article.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the tipping paper of Reevell to wherein a part of an outer surface of the tipping paper is coated with a lip-release material because both Reevell and Pienemann are directed to improving the user smoking experience. Pienemann teaches tipping paper with a lip release material to improve haptical and optical properties of the tipping paper [0017] and this merely involves combining known tipping paper materials of a known smoking article ready for improvement to yield predictable results.
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With regard to Claim 11, Reevell teaches wherein a distal end of the substrate carrier (Fig. 6: #114) is inserted into the deepest part of the heating chamber (Fig. 6: #108).
With regard to Claim 12, modified Reevell teaches wherein the mouth end segment (Fig. 6: #130) is surrounded by lip release material.
Wherein the lip-release material region is a region located between the air hole and a mouthpiece end of the mouthpiece portion
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England, teaches wherein the mouth end segment (Fig. 3: #311) is in a region located between the ventilation holes (Fig. 3: #317) and a proximal end (Fig. 3: #313), acting as a mouthpiece end for a user [0066] to aid with cooling of the smoking article before it reaches the user [0004].
Therefore, before the effective filing date off the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the lip-release material region of modified Reevell to comprise a region located between the air hole and a mouthpiece end of the mouthpiece portion because both Reevell and England are directed to lowering the risk of burning for smoking articles. England teaches ventilation holes to aid with cooling of the smoking article [0004] and this merely involves applying a known temperature control technique to a known smoking article ready for improvement to yield predictable results.
With regard to Claim 13, Reevell teaches a substrate carrier that is deformed upon insertion into the tubular wall due to engaging with protrusions (Pg. 14, Lines 2-7). One of ordinary skill in the art would have been motivated to choose a range of compression sufficient to hold the substrate carrier securely while also avoiding excessive deformation that would limit the function of the substrate carrier (Fig. 6: #114), requiring routine optimization to meet the ranges of the claimed invention (MPEP 2144.05).
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With regard to Claim 14, Reevell teaches wherein when the article (Fig. 6: #114) is inserted into a deepest part of the heating chamber (Fig. 6: #108), a whole of the aerosol substrate portion (Fig. 6: #128) and part of the mouthpiece region (Fig. 6: #130) are compressed by the inner wall surfaces of the protrusions (Fig. 6: #140, Pg. 39: Lines 12-16).
With regard to Claim 15, Reevell teaches wherein the mouthpiece region (Fig. 6: #130) is compressed upon insertion into a tubular wall by protrusions (Fig. 6: #140, Pg. 39: Lines 12-16). One of ordinary skill in the art would have been motivated to select a range of compression sufficient to hold the mouthpiece region of the substrate carrier securely while also avoiding excessive deformation that would limit the function of the substrate carrier (Fig. 6: #114), requiring routine optimization to meet the ranges of the claimed invention (MPEP 2144.05).
Claim 16 are rejected under 35 U.S.C. 103 as being unpatentable over Reevell (CA 3113493 A1), England (US 20190116875 A1), and Pienemann (EP 2801269 A1), as applied to claim 1 above, and further in view of Fursa (US 20190230989 A1).
With regard to Claim 16, Reevell teaches wherein the length of the protrusions may be increased to decrease the volume of air in the heating chamber and increase the contact surface area between the protrusion and the substrate (Pg. 18, Lines 13-17). Modified Reevell teaches all the limitations of the claims as set forth above, however modified Reevell is silent to:
Wherein an axial length of each of the pair of opposite sandwiching walls from an upper end to a lower end of the pair of the opposite sandwiching walls is greater than a length of the tobacco rod portion
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Fursa, directed to an aerosol-generating device, teaches retention ribs (Fig. 4: #2301) extending along an entire internal wall of a chamber (Fig. 3: #230, [0069]). The chamber (Fig. 2: #230) receives an aerosol-generating article (Fig. 3: #10), comprising an aerosol-forming substrate portion (Fig. 3: #20). The ribs (Fig. 3: #2301) extend through distal, proximal, and inlet portions (Fig. 4: #231, #232, & #233) of the chamber (Fig. 3: #230), whereas the aerosol-forming substrate portion (Fig. 3: #20) is only within the distal portion (Fig. 4: #231, [0075]) to provide retention of the aerosol-generating article while maintaining airflow passages through the chamber [0070].
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the sandwiching walls of modified Ouyang to wherein an axial length of each of the pair of opposite sandwiching walls from an upper end to a lower end of the pair of the opposite sandwiching walls is greater than a length of the tobacco rod portion because both Ouyang and Fursa are directed to retaining articles within aerosol generating device. Fursa teaches retention ribs longer than an aerosol-forming substrate portion of an aerosol generating article to provide retention of the aerosol-generating article while maintaining airflow passages through the chamber [0070] and this merely involves applying a known retaining technique to a known aerosol generating device, ready for improvement, to yield predictable results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLUWATOSIN O DIYAN whose telephone number is (571)270-0789. The examiner can normally be reached Monday-Thursday 8:30 am - 6 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/O.O.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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